Analysis: Henderson, Lindland Battle Over Team Quest Trademark Rights

By Tracey Lesetar Feb 28, 2011
Former training partners Dan Henderson and Matt Lindland are now in a lawsuit over the rights to use the Team Quest name and logo.

Henderson filed a lawsuit in California federal district court against Lindland and his company, Team Quest Fight Club, LLC, alleging trademark infringement, copyright infringement and unfair competition. Put simply, the lawsuit boils down to the issue of who has the right to use the Team Quest trademarks.

First, a brief crash course in trademarks: A trademark, often called a “mark,” is a term often used to refer to brand names and logos, which are like property that can be owned, transferred, or loaned out (“licensed”). Trademark owners ordinarily register their marks with the U.S. Patent and Trademark Office (USPTO) soon after they begin using them to legally protect their rights to the marks. Trademark owners usually first search the USPTO’s trademark database before applying for registration to find out if another mark already exists that looks or reads like theirs. Also, anyone applying for trademark registration must disclose both the owners of the trademark and any conflicting rights to the trademark that could interfere with their registration. Although the USPTO registration is not mandatory, it has several advantages. Usually, once someone registers their trademark, they are presumed to be the “senior user” and can defend against anyone else (“junior users”) who use a similar trademark that is “likely to cause confusion” among consumers.

According to the complaint, Henderson and Randy Couture formed Team Quest in 1999, and the two commissioned an artist to make the “fist” logo that continues to be stamped on Team Quest merchandise today and copyrighted that artwork with the U.S. Copyright Office. Henderson alleges that Lindland then joined the team in 2001, after which he and Couture opened their gym in Portland, Ore. Although Henderson claims he and Couture were already actively using the Team Quest name and logo when Lindland came into the picture, the trademarks had not yet been registered with the USPTO. The complaint further alleges that in 2006, Lindland registered trademarks with the USPTO to himself, Team Quest Fight Club, LLC, Couture and trainer Robert Follis, but neither these trademark registration applications nor any of the later applications for Team Quest between 2006 and 2009 mention Henderson as an owner of the mark, including the trademark application for Team Quest MMA Fitness, one of Henderson’s own companies. Henderson claims that this omission was intentional on Lindland’s part.

According to the complaint, trouble started brewing when Lindland asked Henderson for reimbursement on fees and other expenses related to the trademark applications. Henderson refused, allegedly telling Lindland that he was withdrawing his consent for Lindland to use the marks and demanding that Lindland turn the marks over to him. The situation devolved from there. Lindland allegedly sent Henderson a “cease and desist” letter, claiming he owned the marks and insisting that Henderson stop using them. According to one of Henderson’s attorneys, negotiations were ongoing for quite some time in an effort to resolve the dispute. But the parties have been unable to work things out thus far. As a result, Henderson resorted to litigation. Now, he seeks to void Lindland’s trademark registrations and obtain a permanent injunction -- in other words, a complete prohibition -- on Lindland’s further use of the Team Quest or Team Quest MMA Fitness trademarks. Henderson also wants a full accounting for all profits that Lindland earned from using the trademarks after Henderson allegedly withdrew his consent for their use, in addition to other damages and attorneys’ fees.

This lawsuit is certainly not cut and dry. Even though Lindland and his company are technically the registered “owners” of the trademarks, according to the USPTO records, registration is usually not the only factor the court takes into consideration in a trademark infringement case. In trying to identify the “senior user” of the trademark, the USPTO registration is only one piece of evidence that the court ordinarily takes into account. Registration can, however, be a very strong piece of evidence in most cases. But the fact that the registration is in Lindland and his company’s name will not automatically preclude Henderson from getting a shot at proving he was, indeed, the “senior user” before Lindland ever registered the trademarks. In fact, Henderson claims he has continuously used the Team Quest marks since 1999, two years before Lindland joined the team, and, in that time, has “amassed an enormous amount of good will” on behalf of the Team Quest name through his MMA accomplishments. According to the complaint, Henderson also owns the copyright on the artwork that is used in the Team Quest logos, which the court may also choose to take into account in determining whose rights take priority.

Lindland and his company have not yet filed an answer to Henderson’s complaint, but we can probably expect to see one sometime in the next month, unless the parties decide to resolve the matter informally outside of the courtroom before then.

Tracey Lesetar, an attorney at the global law firm Orrick, Herrington & Sutcliffe, is experienced in various matters related to the business of MMA. A more detailed background regarding her experience is available through her lawyer profile at www.orrick.com. This article does not provide legal advice, and any opinions expressed in this article are solely those of the author and do not reflect the views of her law firm. Lesetar can be reached at tlesetar@sherdog.com. J.R. Riddell (jriddell@sherdog.com) also contributed to this article.
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